Capital Gains Manual

Intellectual Property Rights: image rights: law of passing-off

The Law of Passing Off

The classic formulation of passing off was set out by Lord Oliver of Aylmerton in the House of Lords (*Reckitt & Colman Products Ltd v Borden Inc *[1990] 1 WLR 491). He identified three elements that a claimant must establish in order to succeed in a case of passing off -

a goodwill or reputation attached to the goods or services which the claimant supplies by association with their name, trade description or packaging, so that the public identify that name as distinctive specifically of the claimant’s goods or services;

a misrepresentation by the defendant to the public, which does not have to be intentional, so that the public are likely to believe that goods or services provided by the defendant are in fact goods or services provided by the claimant; and

the claimant has suffered, or is likely to suffer, damage as a result of the misrepresentation.

This is sometimes expressed as the classical trinity of reputation, misrepresentation and damage.

Consequently passing-off only protects the goodwill that a claimant has in his or her reputation. A celebrity’s identity indicia (e.g. name, voice, image, etc.) is only protected to the extent that they represent badges of the goodwill in their reputation.

Therefore provided there is reputation/goodwill, misrepresentation and damage, the law of passing-off can be used in the UK to protect a public figure from untrue claims that they have endorsed a product.

Irvine v Talksport Ltd [2003] 2 All ER 881 involved an action for passing-off on the grounds of false endorsement. Former racing driver Eddie Irvine had to establish that he had a significant reputation as a racing driver and that the actions of Talksport (in publishing a doctored photograph of him listening to a Talksport radio, creating the false impression that Irvine had endorsed Talksport) was a misrepresentation that damaged his goodwill. The Irvine case was the first decision in the UK in which a passing-off action succeeded in a false endorsement case.

A recent case of passing-off involved Rihanna and Top Shop (Fenty v Arcadia Group Brands Ltd [2015] EWCA Civ 3) in which Rihanna argued successfully that Top Shop used her image without her permission on a T-shirt. The leading judgment in the Court of Appeal was handed down by Kitchin LJ (approved by the two other Lord Justices in that case) who began his judgment (paragraph 29) as follows -

*“…….setting out some basic principles. There is in English law no “image right” or “character right” which allows a celebrity to control the use of his or her name or image……..” *

Kitchin LJ continued (paragraph 33) -

*“….. A celebrity seeking to control the use of his or her image must therefore rely upon some other course of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off.” *

Another case (Douglas and Anor v Hello! Ltd and others [2007] UKHL 21) concerned Michael Douglas and Katherine Zeta-Jones’ wedding photographs acquired without permission by Hello! magasine. It was alleged that by publishing unauthorised pictures of the wedding, Hello! committed a breach of confidence and the rare tort of causing loss by unlawful means. The leading judgment in the House of Lords handed down by Lord Hoffman confirmed (paragraph 124) that there is no such thing in UK law as an “image right” –

“There is in my opinion no question of creating an “image right” or any other unorthodox form of intellectual property”

and in one of the other judgments Lord Walker said (at paragraph 293) –

*“Although the position is different in other jurisdictions, under English law it is not possible for a celebrity to claim a monopoly in his or her image, as if it were a trademark or brand. Nor can anyone (whether celebrity or nonentity) complain simply of being photographed. There must be something more; either that the photographs are genuinely embarrassing ….. or that their publication involves a misuse of official powers ….. or that they disclose something which merits temporary protection as a commercial secret ….. .” *

These judicial authorities put beyond doubt that under UK law there is no such thing as an “image right”.